The opponent (here after referred to as EBI) based its opposition on a number of registrations for the marks EDDIE BAUER and EDDIE BAUER (signature) in classes 18 and 25 in respect of the same and similar goods as those of the applicant (hereafter referred to as BNH) in its Classes 18 & 25. The Class 28 application was not opposed.

BNH had proceeded to advertisement on the basis of honest concurrent use in the face of two registered proprietors, one of which is the opponent in these proceedings. This evidence was refiled in the opposition proceedings and close inspection showed that the bulk of the use had been in respect of goods such as protective equipment for use in ice hockey, hockey sticks and skates. This use reflects the field of activity of BNH but it did not assist in these proceedings since the goods are outside the area of conflict. No specific evidence was filed in relation to goods in Classes 18 (bags etc) and Class 25 (clothing). BNH claimed there had been no confusion in the marketplace but the Hearing Officer noted that such a claim was irrelevant given the specialized nature of its use and the fact that there was no evidence that EDI had used its marks.

Under Section 5(2)(b) the Hearing Officer determined that identical goods were at issue and that EDI’s best case rested on its prior mark EDDIE BAUER in block capitals. He also decided from his own knowledge that BAUER was likely to be an unusual surname in the UK and that therefore EDDIE BAUER was a distinctive mark. In comparing the marks BAUER and EDDIE BAUER the Hearing Officer took into account the unusual nature of the word BAUER and that it is common to describe people both by their full name and their surname. Taking an overall view the Hearing Officer believed that the public could well believe that use of the mark BAUER was use of the surname element of the surname EDDIE BAUER and that such undertakings were linked economically. Opposition thus successful in respect of Classes 18 and 25.